Appeal 2007-1341
Application 09/894,065
Appellants also argue that there is no teaching, suggestion, or
incentive to modify McCormack in order to meet the invention as claimed
and that the only way to modify McCormack in order to meet the claimed
invention is through the use of improper hindsight. (Br. 13.) This argument
is inapposite because the rejection at issue is one of anticipation under
35 U.S.C. § 102, not obviousness under 35 U.S.C. § 103. No modification
of McCormack is necessary -- indeed, no modification of McCormack is
permitted -- in order to anticipate claim 1.
Accordingly, we conclude that the Examiner did not err in rejecting
claim 1 under 35 U.S.C. § 102(e).
Claims 3-10, 12-14, 16-21, and 23-31 were not argued separately, and
stand or fall together with claim 1.3
NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
35 U.S.C. § 112, Second Paragraph
Claims 14, 16-20, and 30 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
3 As discussed in the new ground of rejection under 35 U.S.C. § 112, second
paragraph, claim 14 does not recite any structure for performing two of its
recited claim limitations. For the purpose of this appeal, we will treat
independent claim 14 and dependent claims 16-20 and 30 as having recited
the appropriate structure, e.g., a "maintaining means for maintaining a set of
attributes . . ." and a "dynamically updating means for, upon receipt . . .
dynamically updating the set of attributes."
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